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Supreme Court modifies standard for obviousness

Issue 2007/14 | Tuesday, May 1st, 2007

The U.S. Supreme Court yesterday handed down its much-anticipated decision in KSR Int’l Co. v. Teleflex Inc., where the issue before the Court was the Court of Appeals for the Federal Circuit’s “teaching-suggestion-motivation” (TSM) test for determining whether an invention was obvious under 35 U.S.C. §103. What is not surprising about the decision is that the Court reversed the Federal Circuit, something is has done in all but a single case over the past ten years. However, the Court’s decision did not eliminate the TSM test, as many had feared, but it did expand the scope of what will be considered obvious. In doing so the Court moved the patentability pendulum incrementally, but decidedly, against patentees.

The case arose over Teleflex’s patent for an automotive gas pedal having an electronic sensor in place of the conventional mechanical linkage used to regulate engine speed and acceleration. The District Court granted summary judgment against the patentee, finding that the invention was an obvious variation of the prior art, assessed under both the Supreme Court’s Graham v. John Deere standard and the Federal Circuit’s TSM test. The Federal Circuit reversed, saying that the District Court had not applied its TSM test with particularity to establish that the art provided sufficient motivation to achieve the claimed invention.

The Supreme Court identified four errors committed by the Federal Circuit. First, the Federal Circuit did not consider the motivation arising from unsolved problems in the art that would be recognized by one of ordinary skill. The Court said that the Federal Circuit’s focus on the problem the inventor was attempting to solve did not take into consideration whether there was a known problem with an obvious solution involving “combining the elements in the manner claimed.”

The second error according to the Court is that the Federal Circuit limited its consideration of the teachings of the art to the problem that the art was intending to solve. The Court stated that “familiar items may have obvious uses beyond their primary purposes,” analogizing an obvious invention to the fitting together of pieces to a puzzle. The Court in this regard further stated that the person of ordinary skill is also a person of ordinary creativity, and not “an automaton.”

The third error ascribed by the Court to the Federal Circuit’s analysis is too great a prohibition of finding obvious something that was “obvious to try.” The Court stated that in certain circumstances what is obvious to try is also obvious, such as where “there is a design need or market pressure to solve a problem, and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”

Finally, the Court said the Federal Circuit erred by overemphasizing the risks of hindsight. Although the proscription against hindsight reconstruction derives from Graham, the Court found that “[r]igid preventive rules that deny fact finders recourse to common sense . . . are neither necessary under our case law nor consistent with it.”

Significantly, however, the Court disapproved of the manner in which the Federal Circuit applied the TSM test, not with the test itself. In fact, the Supreme Court observed that when the Federal Circuit’s predecessor first established the TSM test, it had “captured a helpful insight,” and further, that “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis.” The Court concluded, however that “[h]elpful insights . . . need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents.”

In addition to its grounds for reversing the Federal Circuit, the Court included sufficient dicta on analyzing obviousness consistent with its precedent (United States v. Adams; Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.; and Sakraida v. AG Pro, Inc.) to stimulate both patent examiners and defendants to assert obviousness as the basis for patent claim unpatentability or invalidity. The Court’s refusal to overturn the Federal Circuit’s TSM test, but to require modifications already underway in recent Federal Circuit cases, avoids the expected upheaval in patent law. How much the law has changed, and how far the pendulum will swing against patentability and patentees, remains to be seen.

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